Appeal No. 1997-3887
Application 08/449,204
established by showing that some objective teaching, suggestion or motivation in the applied prior art
taken as a whole and/or knowledge generally available to one of ordinary skill in the art would have led
that person to the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d
1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Vaeck,
947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re Fine, 837 F.2d 1071, 1074-76,
5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988). We agree with appellants that the examiner has failed to carry
the burden of making out a prima facie case of obviousness with respect to the claimed invention
encompassed by these appealed claims.
The examiner has relied on the teachings of Akiyama as discussed in the answer with respect to
the ground of rejection under § 102(b), in each of the three grounds of rejection under § 103. We
found above in comparing the claimed invention encompassed by claim 6, on which each of the claims
considered here directly or ultimately depend, with the teachings of Akiyama that the examiner has not
explained how this reference discloses a “crack resistant” film and the ingredients specified for the
claimed “blend.” Thus, the examiner has not presented on the record an explanation which establishes
that one of ordinary skill in this art would have prima facie arrived at the claimed invention of claim 6
following the teachings of Akiyama. We find no disclosure in Suziki et al. (Suzuki) (claim 7) or in
Mammino (claims 10 and 11) which combined with Akiyama would have led this person to the claimed
invention of claim 6. Thus, without a teaching of the “blend” and “crack resistant” film specified in claim
6 in the prior art, there is no need to consider the other teachings of these references on which the
examiner relies. With respect to claim 8, the examiner finds that one of ordinary skill in this art would
have employed the terpolymer specified in this claim 8 because “it would have been within the general
skill of a worker in the art at the time of the invention to determine suitable polymers for use in the image
receiving layer within the guidelines of the prior art” without any explanation of why this is so. Thus, it is
clear that in these three grounds of rejection, the examiner has improperly indulged in hindsight by
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